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# MANUAL OF PATENT EXAMINING PROCEDURE

PATENT

PROPERTY OF THE UNITED STATES GOVERNMENT

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## MANUAL OF

## PATENT EXAMINING PROCEDURE

U. S. PATENT OFFICE * · DEPARTMENT OF COMMERCE

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November 15, 1949

U. S. GOVERNMENT PRINTING OFFICE

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## Foreword

THIS MANUAL is published to provide examiners in the Patent Office
with a reference work on the practice and procedure within the Office
as it relates to their duties and operations. It contains instructions
to examiners, as well as other material in the nature of information
and interpretation, and generally outlines the current procedure which
the examiners are required or authorized to follow in appropriate
cases in the normal examination of applications, Substantive aspects
of patent law are only referred to briefly.

Examiners will continue to be governed as in the past by the statutes,
the rules of practice, applicable decisions, and orders and instructions
issued by the Commissioner or by the Supervisory Examiners under
his authority. Existing Orders and Notices relating to the subject
matter included in this manual are incorporated and identified as
such. Many Orders and Notices have been revised to coordinate them
with the new rules of practice or to make other changes and are in-
cluded in their revised form; these supersede the previous versions
of the same Orders and Notices.

It is expected that subsequent changes in practice and other revisions
will be incorporated in the form of substitute or additional pages for
the manual. Each examiner will be provided with a copy of the man-
ual for his official use and will be expected to maintain it in current
condition.

Lavenue & Kingsland
Commissioner.

JUNE 9, 1949

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## Acknowledgments

This work is the result of the combined efforts of a large number
of contributing editors including :

D. D. Andrews, C. G. Angel, D. Arnold, M. F. Bailey, W. Berlowitz,
G. L. Brehm, J. L. Brewrink, W. W. Cochran, E. A. Faller, A. J. Gold-
berg, G. A. Gorecki, M. Hertz, A. M. Horton, W. J. Kanof, R. Leibo-
witz, L. J. Lenny, C. Levy, I. Lisann, J. C. MacNab, H. Magil, A.
Margolis, N. Marmelstein, S. M. Newman, R. A. O'Leary, E. Paul,
E. O. Retter, M. C. Rosa, J. Schimmel, A. Shapiro, and R. M. Wood.

In the preparation of this work, use was made of much of the
material in the "Manual of Patent Office Procedure" published by
the Patent Office Society, the last three editions of which were prepared
by C. L. Wolcott. Permission to use this material has been given
by the Patent Office Society. Many helpful suggestions by the mem-
bers of the Patent Office personnel for improving the first draft have
been incorporated in the present text.

Programing and organizing of the project was done by R. D. Lam-
bert, of Wallace Clark & Co., consultants.

(

☒

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## Numbering System

The system of numbering used in this Manual was selected to indi-
cate to the reader topical indentations in the tables of contents. It
may be understood by considering specific examples. Thus, the sym-
bol "1100" refers to Chapter 1100 as a whole; the symbol "1101" refers
to a subdivision indented under 1100; the symbol "1101.01" refers to a
further subdivision indented under 1101; and "1101.01 (a)" refers to
a still further indentation under 1101.01. Thus Chapter 1100 is num-
bered as follows:

## Chapter 1100 Interference

1101
Preliminaries to an Interference

1101.01
Between Applications

1101.01 (a)
In Different Divisions

1101.01 (b)
Common Ownership

1101.01 (c)
The Interference Search

1101.01 (d)
Correspondence Under Rule 202

1101.01 (e)
How Conducted

Indentations beyond the third indentation are ignored in the as-
signment of a symbol. Fourth and further indentations are given
the same type of symbol as a third indentation. Thus in the above
example the section entitled "How Conducted" has the same type
of symbol as the section entitled "Correspondence Under Rule 202."
Because a fourth indent in the table of contents does not show up
in the numbering system, those sections which are a fourth indent
in the table of contents are given a title in the text which includes
the title of the section under which they are indented. Thus, in
the text, the heading for Sec. 1101.01 (e) reads: "Correspondence
Under Rule 202, How Conducted."

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## Contents

Page

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-noting and Status of Applica-

tions

7

300

Ownership and Assignment

17

400

Representative of Inventor or Owner

19

500

Receipt and Handling of Mail and Papers

25

600

Parts, Form and Content of Application

27

700

Examination of Applications

49

800

Division; Double Patenting

97

900

Prior Art, Classification, Search

117

1000

Petitions; Cases Submitted to Commissioner

and Supervisory Examiners

131

1100

Interference

135

1200

Appeal

175

1300

Allowance and Issue

183

1400

Correction of Patent

191

1500

Design Patents

197

1600

Plant Patents

201

1700

Miscellaneous .

205

Appendix I

Table of Orders and Notices

207

Appendix II

List of Decisions Cited

213

Index

217

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## Introduction

## Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, sEc. 8. The Congress shall have
power . .. To promote the progress of science
and useful arts, by securing for limited times
to authors and inventors the exclusive right to
their respective writings and discoveries."

## Statutes

Pursuant to the foregoing provision of the
Constitution, Congress has passed a number of
statutes under which the Patent Office is organ-
ized and our patent system is established. The
provisions of the statutes can in no way be
changed or waived by the Patent Office. The
present laws relating to patents are various
sections of the Revised Statutes of 1874, de-
rived from the Patent Act of 1870, and numer-
ous amendatory and additional acts which
have been passed since that time. These have
been compiled as Title 35 of the United States
Code and are reprinted by the Patent Office
in a pamphlet entitled "Patent Laws." In
referring to a particular section of Patent Laws
there should ordinarily be given both the Re-
vised Statutes section number and the United
States Code citation, thus "R. S. 4886; 35
U. S. C. 31".

## Rules of Practice

One of the sections of the patent statutes,
namely, R. S. 483; 35 U. S. C. 6, authorizes the
Commissioner of Patents, subject to the ap-
proval of the Secretary of Commerce, to estab-
lish from time to time regulations, not incon-
sistent with law, for the conduct of proceedings
in the Patent Office. These regulations are set
forth in a Patent Office booklet entitled "Rules
of Practice of the United States Patent Office
in Patent Cases". The Rules of Practice have a
long history, going back to pamphlets of gen-
eral information to the public, first issued in
1836. The content has been determined by his-
tory, tradition and other factors. Primarily
the function of the Rules of Practice is to advise
the public of the regulations which have been

established in accordance with the statutes and
which must be followed before the Office. But
the Patent Office Rules of Practice have always
additionally included, as numbered rules, infor-
mational material, copies of sections of the
patent statutes, purely internal procedure, and
the like. It goes without saying that the Rules
of Practice govern the Examiners, as well as
applicants and their attorneys.

## Commissioner's Orders and Notices

From time to time, the Commissioner of
Patents has issued Orders and Notices relating
to various specific situations that have arisen
in operating the Patent Office. Notices and cir-
culars of information or instructions have also
been issued by the Supervisory Examiners
under authority of the Commissioner. Orders
and Notices have served various purposes in-
cluding directions to the examiners giving them
instructions, information, interpretations and
the like. Some may be for the information of
the public, advising what the Office will do
under specified circumstances.

## Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Those dissatisfied with an Examiner's action
may have it reviewed. In general, it may be
stated that from that portion of the Examiner's
action pertaining to objections on formal mat-
ters, a petition for review may be taken to the
Commissioner of Patents (1002) and from that
portion of the Examiner's action pertaining to
the rejection of claims on the merits, an appeal
may be taken to the Board of Appeals (1201).
The distinction is set forth in Rules 181 and
191. The decision of the Commissioner on for-
mal matters is final but the decision of the
Board of Appeals on questions passed on by
it may be carried to the courts. See 1216.
In citing decisions as authority for his actions,
the Examiner should cite the decision in the
manner set forth in 707.06.